Inventive Step CONCEPTS Flashcards
UK test
s3 PA
“An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above).”
EPO test
Art 54 EPC
“An invention shall be considered as involving an inventive step, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents are not to be considered in deciding whether there has been an inventive step.”
Windsurfing test
There are four steps for assessing whether something is obvious:
(i) The first is to identify the inventive concept embodied in the patent in suit;
(ii) Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question.
(iii) The third step is to identify what, if any, differences exist between the matter cited as being “known or used” and the alleged invention.
(iv) Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.
Bonus effect
Where an invention provides an unexpected or surprising result that would not have been expected from the prior art, this can indicate an inventive step.
But…
Producing the effect that was expected by to a far greater extent is not inventive
Where a person is led down a “one-way route” (ie the step would have to be take anyway) a bonus effect does not make something patentable
So
The “extra” effect has to be as important (or more important) than the obvious effect – ie the effect that would have been found anyway.
